The IPKat

Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Darren Smyth, Nicola Searle, Eleonora Rosati, David Brophy, Alberto Bellan and Merpel, with contributions from Mark Schweizer. You're welcome to read, post comments and participate. You can email the Kats here

From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Gareth Holliday analyses Nicocigs v Fontem Holdings & Fontem Ventures, [2015] EWHC 2752 (Pat). The case involves a claim of invalidity of Fontem’s Patent EP2022349 related to an electronic cigarette as well as for a declaration of non-infringement and a counterclaim for infringement.

David Brophy blogs about the order in case G 1/15 of the Enlarged Board of Appeal at the EPO, which establishes that partial priority of a claim comprising alternative subject-matter may not be refused based on one or more generic expressions or otherwise (“generic OR-claim”) provided such subject-matter was disclosed in the priority document for the first time.

Daniel Lim reports on the competition panel of AIPPI Congress, which took place in Milan last September, which discussed the relationship between competition and patent law regarding topics such as “pay for delay”, non-cash value transfer and misuse of the patent system.

In the context of the “World’s Greatest Rock & Roll Band” new blues album (eagerly awaited by this kitten!), Neil Wilkof recalls the relationship between the Rolling Stones and Chess Records, in whose studios the “2120 South Michigan Avenue” composition was recorded in 1964.

Rosie Burbidge analyses George East Housewares Ltd v Fackelmann GmbH & Co KG & Probus Creative Housewares Ltd, [2016] EWHC 2476 (IPEC). The passing off case involves the adoption by the defendants of a similar get-up to that used in connection with conical kitchen measuring cups.

Never Too Late 124 [week ending on Sunday 27 November] | Sunday Surprises | EU law forbids the resale of non-original tangible copies of computer programmes | EQE roundup | Technology law on the menu in Madrid | IP Summit 2016 | Announcing JIPLP Conference on the Present and Future of EU and UK Copyright | East meets West: the EU-China IP Forum Part 1 and Part 2 | Around the IP Blogs | Rocket in the Patents Court: Napp Pharmaceutical v Dr Reddy's and Sandoz

Never Too Late 123 [week ending on Sunday 20 November] | Time for a Haar-cut - please do not relocate the Boards of Appeal of the European Patent Office | Remember the House Ban? How two years flies past | Gilead triumphant as Court of Appeal upholds Arnold J in Idenix's Sovaldi appeal | BREAKING: CJEU follows AG and holds French law on out-of-print books contrary to EU law | Again on the first post-GS Media national decision | Top 5 things IP lawyers must remember about English contract law | Monday Miscellany | Around the IP Blogs

Never Too Late 122[week ending on Sunday 13 November] | Is depositing better than sequencing? | European Commission on Biotech Directive: tomatoes about to be squashed? | The U.S. presidential election of 1876: votes, cannabis and intellectual property| CJEU upholds duty to reverse-engineer trade marks in Rubik's cube decision, but what about the actual v abstract test? | BREAKING: CJEU says that EU law allows e-lending| Around the Web Blogs| IP Publishers and Editors' Lunch 2016! | Firings will continue until morale improves - Merpel revisits the EPO

Never Too Late 121[week ending on Sunday 6 November] | Sunday Surprises | Firings will continue until morale improves - Merpel revisits the EPO | Will too much of one and not enough of the other spell bad news for innovation? | BREAKING NEWS Brexit - High Court rules Government cannot Invoke Article 50 under Crown Prerogative | Canada's new approach to diagnostic practices prompts division at CIPO

What better way to spend a Wednesday December evening than tucked up at the British Museum for Hogarth Chambers Festive Patent Seminar. On the menu was "Obviousness over the common general knowledge", followed by mulled wine and mince pies, all served up by chair Michael Hicks, the man behind the successful obviousness over CGK challenge way back when in Pozzoli SpA v BDMO SA & Others [2006] EWHC 1398 (Pat) (first instance) and [2007] EWCA Civ 588 (Court of Appeal).

Johnny Moss opened the seminar, and explained that there are two types of obviousness over the CGK attack. (1) where the prior art is said to constitute the CGK; and (2) where obviousness is alleged over the CGK alone i.e. a 'collocation of known aspects of the CGK'. It is this second category which causes the most issues. A collocation attack is often tried, but is rarely successful. Why is this? And what can a litigant do to increase their chances of a successful attack? Analysing the five principles put forward by Floyd J in Ratiopharm v Napp Pharmaceutical Holdings Ltd[2008] EWHC 3070 (Pat) (see paras 154-159), Johnny observed that the days of simply pleading "obviousness over the CGK" are long gone - you must now assert what it is that you specifically allege is CGK.

The British Museum - filled with IP lawyers and mince pies

The Courts have repeatedly stated that obviousness over the CGK arguments must be "treated with caution" - this phrase is used in many cases. A higher level of scrutiny is justified because an obviousness over CGK argument: (a) enables the litigant to avoid inconvenient details (e.g. teaching in the other direction, misleading context) that might be found in a piece of prior art; and (b) the combination of features relied upon is always and necessarily one created with hindsight knowledge of the invention. In the recent case of Accord Healthcare v Medac Gesellschaft [2016] EWHC 24 (Pat), Birss J noted that if an invention is not obvious over concrete prior art, the Court is entitled to be sceptical that it is nevertheless obvious over the CGK alone (see paras 119-124).

Jamie Muir Wood reviewed the recent decision in Unwired Planet v Huawei [2016] EWHC 576 (Pat) (the third technical trial, which involved a standard essential patent), where an obviousness over CGK argument failed. Here, the Court found that the defendant had not properly pleaded its case on CGK - and when the claimant requested further information, the defendant responded to the effect that its position would be elaborated on in expert reports. The defendant's case on CGK was presented in a way which lacked inconvenient details which were found when the same ideas appeared in the committee documents and "it presented points of common general knowledge at a level of generality which itself was crafted with hindsight." Jamie noted that the requirement to specify your case on obviousness over the CGK upfront puts litigants in a difficult position.

The seminar rounded off with Richard Davis covering the recent Meter-Tech LLC v British Gas Trading Limited [2016] EWHC 2278 (Pat) decision. British Gas pleaded that a series of propositions were CGK. Many of these were accepted by Meter-Tech (the exclusive licensee), but the Amended Grounds of Invalidity had not explained how the skilled person would get from the CGK to the claim (i.e. no path to the invention had been identified). Mr Daniel Alexander QC (sitting as a Deputy High Court Judge) explained that a statement of case should set out not only "what the common general knowledge is alleged to be but also how that differs from the invention of the patent and why such is said to render the claim in question obvious. That requires a pleading not of just the starting point but of the allegedly obvious route to the claimed invention so that the notional thinking of the skilled person can be seen and evaluated."

Going forwards, although it is clear that the Courts recognise obviousness over the CGK as a valid basis upon which to revoke a patent, how does one improve their chances of successfully challenging a patent on the basis of obviousness over the CGK alone? Richard noted that it has become increasingly difficult to plead a broad principle as CGK. It would seem better to plead the CGK as a series of tenets, and frame the analysis into the Pozzoli questions for assessing obviousness (i.e. the reformulated Windsurfer questions). Setting out your position on obviousness over the CGK in the pleadings imposes a heavy burden on the party seeking revocation. This is particularly so in IPEC proceedings, where expert witnesses may not even have been appointed. The reluctance to set out your CGK case upfront is understandable - prior to the exchange of expert reports, the patentee will not usually have set out its case on claim construction, and it is therefore exceedingly difficult to know the target to meet. A claim of obviousness on the basis of CGK alone will not be easy, but the Pozzoli case shows that it is possible.

Thursday, 8 December 2016

The AmeriKat never loves in haste, unlessyou happen to be a tasty little mouse...

Lord Byron, Lothario of the Romantic movement and one of the greatest British poets. Not the figure that would naturally come to mind in a post about the Unified Patent Court, but bear with the AmeriKat. In 1819, in his most famous work, Don Juan, Lord Byron wrote:

"Now hatred is by the far the longest pleasure;
Men love in haste, but they detest at leisure".

It is a wonderful quote, illustrating that the speed in which decisions are made can mask, temporarily, the ultimate sorry fate for having made such a decision. As a keen observer of people, the AmeriKat has seen this in action in various guises. From the banal - watching the regret soaking down someone's face as their hastily ordered dish is placed next to their dining companion's more riveting platter - to the more serious. Then there are those who Lord Byron need never worry about where a decision, much less a hasty one, is unlikely to ever be forthcoming (you know who you are...).

However, where on the spectrum will the UK's announcement of their intention to ratify the Unified Patent Court Agreement fall? Does it fall into the "ratify in haste, repent at leisure" camp?

As IPKat readers will be aware there has been significant discussion, albeit a lack of concrete action (as of yet), about the need to ensure that, if the UK does ratify, it can continue to participate post-Brexit. However, the UPCA is silent on the scenario where a signatory ceases to be a EU Member State and the ambiguity (or stone cold clarity, depending who you ask) of Opinion 1/09 does not help matters.

Over the past several months on the European patent law conference circuit, prior to the UK's announcement, everyone was agreed that continued UK involvement was desired. However, two factions began to emerge. One faction was cooing that UK industry need not worry, everything would be fine - the UK need just ratify. The litigators among you who have ever received an 11PM cold call from a transactional colleague asking whether you can "just approve this IP-heavy transaction, we are signing tomorrow" will have experienced the nervousness of the second faction. "If I have to sign this off, I just know that in a few years I or some other litigator will be cleaning up a mess...." Cue Lord Byron's "love in haste, detest at leisure" adage.

Against this backdrop, the question of what happens when the UK ceases being a EU Member State was subject to the commissioning of the Gordon-Pascoe opinion. That opinion suggested that for the UK to remain part of the UPC, additional agreements and amendments would be needed. A key issue concerns the power of courts of EU Member States to refer matters to the CJEU under Article 267 TFEU. The UPC, as a court common to EU MS, also has this power to refer questions to the CJEU (see Article 1 and 21 UPCA). However, if a contracting party to the UPCA ceases to be a Member of the European Union, the court is not common to EU MS - it will include a non-EU MS interloper, the UK. Does this mean that the UPC will not be able to refer questions to the CJEU contrary to the UPCA and EU law (see Article 20 UPCA)? The UPCA does not deal with this at all. Indeed, the UPCA does not even contemplate that a signatory will be a non-EU Member State. The UPCA refers to a party to the agreement as a "Contracting Member State" defined as "a Member State of the European Union party to the Agreement" (see Article 2(b) and (c) UPCA). This is not surprising given that, in 2013 when the UPCA was signed, no one had envisaged that the UK would, in the very near future, cease being a Member of the European Union.

So something further seems to be needed to ensure, with "sufficient degree of certainty" (to adopt the language of Article 62(4) UPCA), the UK's continued UPC participation post-Brexit. Without such measures, the impact on UK industry could be significant. For example, if the UK can no longer participate in the UPC, what happens to the coverage of Unitary Patents in the UK? What about pending UPC litigation or the enforcement of orders already granted by the UPC in the UK? Yet when the UK Government published its announcement at the end of November, no reference was made for the need for a transitional protocol to be prepared as part of its steps towards ratification.

Last week, the IP Federation published their response to the UK's announcement to ratify. In the statement, the IP Federation expressed the need to ensure that the "UPC functions effectively in the long term". They have importantly called on the UK and the other contracting Member States to urgently start work to ensure there is:

".... a legally secure route by which the UK can remain in the UPC after Brexit. If this work also makes it possible for other states which are not part of the EU but which are part of the European Patent Organisation to join the UPC this would be welcomed.".

If, for whatever reason, the UK cannot remain part of the UPC on Brexit, then:

"[t]he UK government needs to provide assurances that any Unitary Patents will be recognised as UK national patents. The UK and other contracting states will also need to produce transitional arrangements to govern what will happen to ongoing litigation at the UPC and to ensure the continued functioning of the court.

Given that the clock is now ticking for the commencement of the UP and UPC, the IP Federation calls on both the UK and the other contracting states to commence work on the legal framework that will be needed for both of these options as soon as possible. It will be vital for the UK and other con­tracting states to provide opportunities for industry to provide input into the shape of this legal framework. The IP Federation looks forward to playing a constructive part in this process."

The AmeriKat agrees Given that the purpose of the UPC is to "enhance legal certainty" in the enforcement of patents (see Recital 5 of the UPCA), it would seem perverse that the UK's ratification of the UPC would result in increased uncertainty for industry post-Brexit in patent law. So for those wishing for a quiet holiday period, get your sleeves rolled up and quills at the ready....

The role of recordation of well-known marks varies across jurisdictions. Against that backdrop, the step about to be taken by the Trade Marks Registry in India in connection with recording well-known marks is especially noteworthy. Kat friend Ranjan Narula, of RNA Intellectual Property Attorneys, describes what can be expected to shortly take place.

"Indian trademark law recognises well-known marks and it has adopted the criteria set out in Article 6 of the TRIPS agreement to determine if a mark is well-known.

However, the Trade Marks Act, 1999, had no specific provision to seek a formal declaration from the Trade Marks Registry regarding the well-known status of a mark. Since 2003, the Indian Trade Marks Registry has produced a list of marks that the courts have considered to be well-known, such as PHILIPS, INTEL, PEPSI, HONDA, OMEGA, MARS, HORLICKS, TATA, WOOLWORTH, TOSHIBA, SONY and CARREFOUR. The list is growing and currently has 81 marks. Brand owners have time and again pointed out that relying solely on a court ruling holding that a mark is well-known is a narrow interpretation of the criteria set out in section 2 (1) (zg) and Sections 11 (6), (7), and (9) of the Trade Marks Act. Thus, many brands may be unable to make it to the coveted list if they do not have a court ruling in their favour, even though the mark may otherwise be well-known. Amazon is one such example that does not appear in this list.

To address the concerns of brand owners, the Trade Marks Registry has proposed an amendment to the current Trade Mark Rules, 2002, to provide a specific reference to a declaration to record a mark as well-known. As s result, as per the proposed amendment, a rights holder will be able to make a request to the Registrar of Trade Marks to determine a trade mark to be a “well-known” mark. Such a request shall be accompanied by a ‘statement of case’.

In addition, the applicant shall be required to file relevant evidence and documents in support of such a claim, which may include evidence of use and promotional documents. The Registrar may fix criteria in this regard. It is apparent that the proposed amendment confers significant discretionary powers on the Registrar in determining whether a mark is ‘well-known’, based on the adduced evidence by the Applicant along with the statement of case. The provision also empowers the Registrar to remove a trademark that has been erroneously or inadvertently included in the list.

The trade marks Registry intends to charge hefty fees, as set out below, for an application for requesting inclusion of a mark in the list of well-known trademarks.

E-Filing INR 100,000; USD $1455 (approximate)

Physical filing INR 110,000; USD $1600 (approximate)

The new Rules are likely to come into force as early as next week. Still, the new Rules open certain matters, as various practitioners and brand owners have pointed out. Some of the concerns expressed by stakeholders are:

1. The basis for stipulating the criteria for determination of a well-known mark is not clear. The Trademarks Registry should have clearly spelled out that criteria laid down in Sections 2 (1) (zg) 11 (6) and (7) and 11(9) of the Act will apply.

2. It is not apparent whether ‘determination’ by the Registrar is required if the mark has already been recognized as well-known mark by a Court/Intellectual Property Appellate Board/Registrar in a contentious proceeding.

3. As there is already a list of well-known marks published by the Trademarks Registry, it is not clear whether a ‘new’ list shall be created or the existing list updated.

4. The fees, 100,000 Rupees for e-filing (approximately US$ 1455), and even more for physical filing, are unreasonable and without justification.

5. To safeguard rights of an aggrieved person, a procedure for publication and opposition/intervention against a determination that a trademark as well-known should be provided.

However, despite these issues, the Trademarks Registry is likely to proceed with the new Rules as currently set out."

A little more than a year
ago this blog reported that a new reference for a
preliminary ruling to the Court of Justice of the European Union (CJEU) had
been filed by the Rechtbank Midden-Nederland
(District Court, Central Netherlands, Netherlands).

Background

This
reference [Stichting Brein v Jack Frederik Wullems, acting under the
name of Filmspeler, C-527/15] had arisen in the context of litigation between Dutch anti-piracy
organisation Stichting Brein and Jack
Frederik Wullems over the sale, by the latter and through - among other things
- his site www.filmspeler.nl, of various models of a multimedia player
under the name ‘filmspeler’.

Filmspeler
is a player for connecting a source of image and/or sound signals to a
television screen. If the multimedia player is connected to the internet, on
the one hand, and to a user’s screen (for example, a television screen), on the
other, the user is able to stream the image and the sound from a web portal or
website.

Among
other things, Wullems installed add-ons [over which he had no influence] containing hyperlinks which, if clicked,
would redirect the user to streaming websites, controlled by third parties, on
which films, television series and (live) sporting events could be enjoyed free
of charge, with or without the authorisation of relevant rightholders.

Stichting
Brein sued Wullems for copyright infringement before the District Court of
Central Netherlands, claiming that through
the sale of the Filmspeler player, Wullems was carrying out a
‘communication to the public’ contrary to Dutch copyright law.

The District Court held the
view that the relevant Dutch provisions should be interpreted in light of
Article 3 of the InfoSoc Directive but considered that:

(1)
CJEU case law existing at that time [notably Svensson and BestWater] would not provide criteria
sufficient for reaching a decision in this case; and

(2) it was unclear whether the defence for temporary copies, pursuant to the Dutch transposition of
Article 5(1) of the InfoSoc Directive, would be applicable to relevant streaming activities.

The
District Court decided therefore to stay the proceedings and seek guidance from
the CJEU as to the following:

‘1) Must
Article 3(1) of the [InfoSoc] Directive be interpreted as meaning that
there is “a communication to the public” within the meaning of that provision,
when someone sells a product (mediaplayer) in which he has installed add-ons
containing hyperlinks to websites on which copyright-protected works, such as
films, series and live broadcasts are made directly accessible, without the authorisation
of the right holders?

2) Does it
make any difference:

- whether the
copyright-protected works as a whole have not previously been published on the
internet or have been published only through subscriptions with the
authorisation of the right holder?

- whether the
add-ons containing hyperlinks to websites on which copyright-protected works
are made directly accessible without the authorisation of the right holders are
freely available and can also be installed in the mediaplayer by the users
themselves?

- whether the
websites and thus the copyright-protected works made accessible thereon —
without the authorisation of the right holders — can also be accessed by
the public without the mediaplayer?

3) Should
Article 5 of the [InfoSoc] Directive (Directive 2001/29/EC) be interpreted
as meaning that there is no “lawful use” within the meaning of
Article 5(1)(b) of that Directive if a temporary reproduction is made by
an end user during the streaming of a copyright-protected work from a
third-party website where that copyright-protected work is offered without the
authorisation of the right holder(s)?

4) If the answer to the third
question is in the negative, is the making of a temporary reproduction by an
end user during the streaming of a copyright-protected work from a website
where that copyright-protected work is offered without the authorisation of the
right holder(s) then contrary to the “three-step test” referred to in
Article 5(5) of the [InfoSoc] Directive (Directive 2001/29/EC)?’

Today's AG
Opinion

This
morning Advocate General (AG) Manuel Campos Sánchez-Bordona delivered his Opinion, and held the view that:

(1) the sale of a multimedia player of the kind at issue
in the main proceedings constitutes “communication to the public” within
the meaning of Article 3(1) of the InfoSoc Directive [note (para 33) that the submission of the
Commission is that in the case at hand Article 3(1) would not be triggered
because what Wullems did was to provide a mere ‘physical facility’ that
would enable, but would not in itself be, a communication], and

(2) cannot be covered by the exception laid down in
Article 5(1) therein, inasmuch as it does not fall within the definition
of “lawful use” in subparagraph b) of that provision and, in any case, does not
fulfil the conditions for application of the three-step test in
Article 5(5).

Communication
to the public

The AG noted at the outset [para 3] how
the first and second questions referred by the
Dutch court are, in some respects, the same as those which gave rise to the
judgment in GS Media[Katposts here]. However,
according to the referring court, in this case the factual difference is that -
unlike the background proceedings in GS Media - no
hyperlinks were posted on the defendant's own website, but rather add-ons with
hyperlinks were installed in the mediaplayer offered by him.

Despite this, according to the AG the CJEU
judgment in GS Media is applicable to the case at hand [para 4].

Interestingly enough, at para 41 the AG also
warned against the risks of departing from previous CJEU decisions [is this why not even AG Wathelet in his GS MediaOpinion - here - dared to say that adopting his
view would mean departing from the CJEU conclusions in Svensson?]:

"The requirement of
certainty in the application of the law obliges the court, if not to apply
the stare decisis in absolute terms [formally
there is no system of binding precedent at the CJEU level], then to
take care to follow the decisions it has itself, after mature reflection,
previously adopted in relation to a given legal problem. To my mind, that is
what must happen with regard to the case-law laid down (or confirmed) in the
judgment in GS Media regarding the relationship between
hyperlinks and communication to the public in the context of Directive
2001/29."

Having said so, the AG recalled the cornerstones
of GS Media, ie that [paras
42-43]:

"(a) the
provision of clickable links to protected works must be considered to be
‘making available’ and, therefore, such conduct is an ‘act of
communication’; (b) that concept refers to any transmission of the
protected works, irrespective of the technical means or process used, and
(c) there is a rebuttable presumption that the posting of a hyperlink to a work
unlawfully published (without the authorisation of the right holders) on the
internet amounts to a ‘communication to the public’ within the meaning of
Article 3(1) of Directive 2001/79, if it is done in pursuit of profit.

In the
same vein, the Court has held that the concept of communication to the public
of a protected work requires either the communication to be made by a specific
method different from those used before or, failing this, the work to be
distributed to a ‘new public’, deemed to be a public which the right holders
did not take into account when they authorised the original (limited)
distribution of the work."

According to the AG [para 44] "it is not difficult to conclude that the case-law laid
down in the judgment in GS Media, regarding the relationship
between hyperlinks and the concept of communication to the public, is
applicable" to the case at hand.

This said, he considered the material difference
that, unlike in GS Media, Wullems did not directly provide any
hyperlinks to protected works, but rather offered for sale a multimedia
player with add-ons containing such hyperlinks.

Rejecting the Commission's
"reductionist" [in the AG's
view: see para 49] submission that Wullems’
intervention was ‘not crucial’ and that he merely ‘enabled’ the public to have
access to content that can be downloaded from other websites, the AG held [paras 49-51] that:

"Marketing of
the filmspeler goes beyond the mere sale of a technical
accessory ... In that device,
Mr Wullems provides, inseparably, the necessary hardware and software
which are aimed directly at enabling purchasers to access
copyright-protected works on the internet without the consent of right holders.
Provision of that immediate access to an unspecified public is part of the
added value of the service supplied by Mr Wullems, for which he receives
the price paid — or at least a substantial part thereof — in return
for the mediaplayer ... [T]here is no significant difference between posting
hyperlinks to protected works on a website and, as in the present case,
installing hyperlinks in a multimedia device designed specifically for use with
the internet (in particular, so that, through it, users are able to access
straightforwardly, directly and immediately, digital content made available
without the consent of the authors). The provision of links to that protected
content, the making available of that content to the public, is a feature
common to both types of conduct, and its apparently incidental or ancillary
nature cannot conceal the fact that the activities concerned are aimed at
ensuring that anyone may, merely by clicking on the hyperlink, enjoy the
protected works."

AG Campos Sánchez-Bordona

And here's the crucial bit [paras 53-54]:

"It is
therefore possible to refer to the indispensable role, within the meaning of
the case-law, played by Mr Wullems in the communication to the public
of protected works; his intervention is performed deliberately and with full
knowledge of the consequences entailed. That is clear, in particular, from the
examples of the advertising he uses to promote his device.

In short,
the filmspeler cannot be regarded as a mere ‘physical
facility’ within the meaning of recital 27 in the preamble to Directive
2001/29, but rather as a type of communication to the public of
copyright-protected works that have previously been unlawfully uploaded to the
internet. Mr Wullems’ conduct involving the installation of hyperlinks to
those works in his devices, which he clearly does in pursuit of a profit and in
awareness of its unlawfulness, assists purchasers of the filmspeler to
avoid the consideration payable for lawful access to those works, that is,
payment of the remuneration due to the right holders which usually takes the
form of a membership fee, subscription or another pay-per-view method."

Having said so, the AG turned to consideration of
whether the public targeted by Wullems's act of communication would be also
'new'. The AG answered in the affirmative, also noting [para 58] that "the filmspeler entails
an undeniable advantage for a significant portion of that public: persons not
particularly skilled at using the internet to find illegal sites for watching
films and televisions series, amongst other digital content. That portion of
the public might prefer the user-friendly menu which the filmspeler displays
on its screen to the sometimes laborious search for websites offering such
content."

Temporary copies defence?

Turning to the third and fourth questions the AG considered that,
in relation to Article 5(1) of the InfoSoc Directive, the condition that would
not be satisfied is the one relating to the ‘lawful
use’ of a protected work [para 65]. The AG added [para 71] that

"lawfulness,
in objective terms, depends rather on the authorisation of the right holder or
his licensee. Excusable ignorance or reasonable lack of knowledge, on the
part of the end user, of the fact that no such authorisation exists could,
undoubtedly, exempt the user from liability, but it does not exclude —
I repeat, in strictly objective terms — the unlawfulness of the ‘use’
referred to in Article 5(1) of Directive 2001/29."

Another indispensable intervention

It follows [para 72]that, since the protected works
to which the hyperlinks installed on Mr Wullems’ filmspeler lead
were not authorised by the copyright holders, streaming by an end user by means
of that device would not be consistent with ‘lawful use’ for the purposes of
Article 5(1)(b) of the InfoSoc Directive.

Three-step test

The AG also noted that, even admitting that use
of Wullems's device was covered by Article 5(1), none of the conditions in the
three-step test within Article 5(5) of the InfoSoc Directive would be
satisfied.

Also recalling the CJEU decision in ACI Adam[Katposts here], the AG
noted how "it would run counter to Directive 2001/29 to allow
indiscriminate or widespread reproductions from unlawful sources, or
reproductions made by circumventing the access limits. Accepting the validity
of such reproductions would be tantamount to promoting the circulation of
pirated digital content and, to that extent, would seriously prejudice the
protection of copyright and create favourable conditions for unlawful methods
of distribution, to the detriment of the proper functioning of the internal
market. [para 77]

Comment

Today's AG Opinion is good news for rightholders,
especially because the AG appeared to construe the notion of 'indispensable
intervention' fairly broadly and in a way that goes beyond a 'merely direct'
indispensable intervention [as instead,
in my view, the CJEU had done in Reha Training - here - and GS Media].We shall see if the CJEU follows the AG Opinion:
if this happens - and with the same nuances - then Filmspeler is going to be
an additional step towards an even broader interpretation of what the elusive
concept of 'communication to the public' entails.

Just over a year ago, AIPPI hosted a Rapid Response seminar following Mr Justice Arnold finding that the material claims of Warner-Lambert’s patent for the use of pregabalin in the treatment of pain were invalid and in any event not infringed by Actavis’ skinny label pregabalin product Lecaent (Warner-Lambert v Actavis[2015] EWHC 2548 (Pat)). At that stage, the panel were also in possession of six other judgments from Arnold J concerning pregabalin and one from the Court of Appeal. Steven Willis (Bristows) reports:

"Since that first rapid response seminar, Arnold J has issued a further judgment concerning Warner-Lambert’s right to amend the Patent after the trial and whether that amounted to an abuse of process (Generics (UK) t/a Mylan v Warner-Lambert [2015] EWHC 3370 (Pat)). In addition, last month, the Court of Appeal upheld Arnold J’s findings on the validity of the Patent and the amendment/abuse of process issues but disagreed with him, obiter, on issues concerning the construction and infringement of Swiss Type Claims (Warner-Lambert Company LLC v Generics (UK) Ltd (t/a Mylan) & Ors [2016] EWCA Civ 1006).

The same panel of experts - Claire Baldock (Boult Wade Tenant), Brian Cordery (Bristows) and Stuart Baran (3 New Square) - that presented at the first seminar reconvened last week to revisit the issues and grapple with new ones raised by the two most recent judgments. Claire covered the plausibility/insufficiency aspects of the Court of Appeal judgment, Brian addressed the amendment and related abuse of process issues and Stuart tackled the thorny area of the construction and infringement of Swiss type claims.

Plausibility/Insufficiency

Claire reminded the audience of the relevant background to the insufficiency issues, some of which are set out below:

The Patent in suit contains Swiss form claims to pregabalin in the treatment of pain (Claim 1) and in the treatment of neuropathic pain (Claim 3).

Pain is difficult to define both clinically and in patent terms. Paragraph [0003] of the Patent states that the invention is directed to chronic pain disorders. It then provides a list of conditions which the invention is said to include but not be limited to. Paragraph [0006] of the Patent then refers to the invention as being the use of pregabalin in "the treatment of pain as listed above".

The Patent refers to neuropathic pain as being that "which is caused by injury or infection of peripheral sensory nerves”. The patent does not draw a distinction between peripheral neuropathic pain and central neuropathic pain.

The Patent contained data relating to animal models of inflammatory pain. None of these models were established models of neuropathic pain.

Inflammatory pain contains a central sensitisation component which is present in neuropathic pain but not central neuropathic pain.

Claire went on to summarise some of the parties’ key submissions on plausibility/insufficiency:

The Defendants argued that Warner-Lambert must rely on the data in the animal models for the purposes of plausibility.

Warner-Lambert responded that central sensitisation component provided the requisite link between the animal models and the claimed forms of pain.

Mylan contended that not all forms of pain which fell within the claims contained a central sensitisation component. Furthermore, it was CGK that neuropathic pain included both peripheral neuropathic pain and that central neuropathic pain did not have a central sensitisation component.

Warner-Lambert argued that the skilled person would in any event have understood claim 3 (i.e. to neuropathic pain) to have been limited to peripheral neuropathic pain.

Claire considered the Court of Appeal’s construction of the claim and noted the finding that not every use of a term will be understood to be a definition:

although it is often said that a specification can act as its own dictionary, not every use in the specification of a term found in the claim will be understood by the reader to be a definition. On no basis can paragraph [0006] or [0003] or the two paragraphs read together be taken to be a definition of what the patentee means by the term "pain". They are statements exemplifying the broadest statement of invention, namely that pregabalin is suitable for the treatment of pain.

This contributed to the Court's finding that the skilled person would have viewed the claims as being broad claims to efficacy concerning the treatment of all kinds of pain. Although the skilled person would adopt a narrow meaning of a particular claim if there were CGK reasons as to why the wider meaning would cover implausible embodiments, this was not such a case. The Patent taught that pregabalin is likely to treat inflammatory pain. Inflammatory pain has a central sensitisation component. Therefore, the skilled person would know that pregabalin might work for peripheral neuropathic pain but not for central neuropathic pain because of the lack of a central sensitisation component. The claim was therefore not plausible across its scope. Having failed to overcome the plausibility hurdle, the patentee was not entitled to rely on post-published evidence to show sufficiency.

Claire raised some interesting points to consider at the end of her talk:

In light of Kitchen LJ’s treatment of paragraphs [0003] and [0006], what is/is not to be recognised as a definition in a Patent? Claire considered that in light of this decision, Patent Attorneys must be particularly precise with definitions and the definitions must be reasonable based on the state of the art at the time.

At what level of generality should the plausibility test be applied? In the event that certain embodiments of a claim are plausible at the priority date, should it be possible to “fill in the gaps” with later filed evidence (bearing in mind that pregabalin works in central neuropathic pain).

Should evidence of technical effect only be rejected where nothing plausible is covered by the claim?

Is it sometimes the case that having no data in your Patent is better than having the “wrong” data? Claire referred to the HGS v Lilly[2011] UKSC 51 and Actavis v Lilly[2015] EWHC 3294 (Pat) cases as examples of patents which did not have data in them and yet were found to be plausible.

Amendment / Abuse of Process

In light of Arnold J’s first instance finding on plausibility/sufficiency, Warner-Lambert sought to amend its claim to neuropathic pain to that which is "caused by injury or infection of peripheral sensory nerves”. Arnold J refused the application to amend and considered it an abuse of process. This was upheld by the Court of Appeal.

Brian Cordery reminded the audience of the general principles relating to amendments set out in Henderson v Henderson (1843) 3 Hare 100 and Johnson v Gore Wood[2000] UKHL 65 which prevent re-litigation in circumstances not amounting to strict res judicata. Brian considered that the same principles apply to applications to adduce new evidence on appeal to that which was considered at first instance (see e.g. Ladd v Marshall [1954 EWCA Civ 1; MMI Research v Cellxion [2012] EWCA Civ 7).

Brian also reminded the audience of the three categories of amendments recognised by Jacob LJ in Nikken v Pioneer[2005] EWCA Civ 906:

(a) before a trial; (b) after trial, at which certain claims have been held valid but other claims held invalid, the patentee simply wishing to delete the invalid claims (I would include here also the case where the patentee wishes to re-write the claims so as to exclude various dependencies as in Hallen v Brantia [1990] FSR 134. There the patentee is in effect continuing to claim which he had claimed before but in a much smaller way); and (c) after a trial in which all claims have been held invalid but the patentee wishes to insert what he hopes are validating amendments.

Brian pointed out that categories (a) and (b) are generally considered acceptable whereas category (c) will generally amount to an abuse of process. Brian considered whether this was altered by the Court of Appeal decision in Samsung v Apple [2014] EWCA Civ 250 where the Court of Appeal held that an application to centrally limit a Patent following a first instance finding of invalidity did not amount to an abuse of process per se, although as Brian noted, the Court was careful to point out that asserting such a Patent in the UK could still amount to an abuse:

"we believe that whether or not a patentee's attempted reliance before this court upon a patent which has been amended pursuant to a central amendment application made after trial constitutes an abuse of process must depend upon all the circumstances, including whether it would be necessary to remit the case for retrial and, if so, what the consequences of that would be.”

Having considered the law, Brian revisited the procedural history of the pregabalin litigation noting that the Defendants had raised the distinction between neuropathic and central neuropathic pain in their reply expert report. They had also referred to it in their skeleton argument. Warner-Lambert did not object to the argument being raised at this stage. Warner-Lambert instead focussed its case on arguing that the skilled person would construe neuropathic pain as being limited to peripheral neuropathic pain, which was ultimately rejected by Arnold J at first instance, a rejection which was upheld on appeal.

Brian set out some of the arguments relied upon by Warner-Lambert as to why it should have been allowed to amend claim 3 post-trial, which include:

that Warner-Lambert had been the victim of procedural unfairness by the Defendants raising the peripheral/central distinction so late in proceedings;

that the proposed amendment should not be considered to fall within Jacob LJ’s category (c) but instead was more akin to a category (b) amendment as it simply sought to excise invalid matter from an otherwise valid claim; and

the amendments would not in any event require a retrial.

Brian highlighted the Court of Appeal’s reluctance to interfere with a first instance judgment on this issue. This case ultimately depended on two issues: (i) had the subject matter of the claim as proposed to be amended been the subject of a finding (such that a retrial would not be require)?; and (ii) in light of the procedural history, had Warner-Lambert been hampered from proposing an amendment to Claim 3 at an earlier stage in proceedings? The Court held that notwithstanding the procedural issues, Warner-Lambert could and should have proposed its amendment at the start of trial. Had it done so, Mylan could have run a different attack on the validity of the claim.

Brian’s take home points included:

Propose amendments at an early stage in proceedings, preferably before trial;

Keep possible amendments in mind as the trial progresses; and

carry out a mock trial with a view to unearthing any unexpected issues.

Brian concluded by reminding the audience that Warner-Lambert has petitioned the Supreme Court for permission to appeal and that the Supreme Court will be hearing issues relating to the construction of Swiss-type claims next year in the Actavis v Lilly (pemetrexed) case.

Construction/Infringement

IPKat readers will recall that construction and infringement issues first arose in these proceedings within the context of Arnold J’s refusal of Warner-Lambert’s application for an interim injunction and the Defendants’ application to strike out Warner-Lambert’s case under s60(2). Arnold J held that the claim required subjective intention, on the part of the manufacturer, that pregabalin would be used in the treatment of pain at the point of manufacture and as a result there was no arguable case on infringement. Similarly, the absence of a downstream act of manufacture led Arnold J to strike out the s60(2) infringement claim.

On appeal, Floyd LJ had disagreed with Arnold J’s “subjective intention” approach and set out, obiter, his test of "reasonable foreseeability”. The refusal of the interim injunction was upheld (as the Court was reluctant to interfere with Arnold J’s assessment of the balance of convenience but the s60(2) strike out was overturned. Arnold J attempted to grapple with Floyd LJ’s test in the first instance decision on the merits of the case, but in doing so expressed serious doubts as to its correctness. Due to the uncertainty and notwithstanding the Court of Appeal’s finding that the patent was invalid, the Court of Appeal sought to clarify the position, albeit that the Court’s comments are once again obiter.

Stuart Baran reminded the audience that Swiss-Type claims were a fudge designed by the EPO to get around the methods of treatment exclusion from patentability that was present in the EPC at that time. As such, Stuart suggested that the focus should be on providing a logical and fair outcome rather than water-tight reasoning. The latter may not be feasible in light of the “legal fiction” of Swiss-type claims. Bearing in mind that the novelty in the claim derives from the new use of the known drug and has nothing to do with “manufacture” or “preparation”, Stuart emphasised that a fair and logical outcome would result in the patentee being rewarded for its investment in bringing a new treatment to patients and generic pharmaceutical companies being allowed to market the drug in question for the non-patented indications.

Stuart provided an overview of the approach in some other European jurisdictions to what constitutes an infringement of Swiss-type claims. The German Courts appear to have adopted the “only packaging will do” approach i.e. there must be some direction to the new use on the SmPC or PiL in order for there to be a finding of infringement. Other forms of encouragement will not suffice. In Spain, the Courts have required some positive encouragement on the part of the generic. Finally, in France the Courts have arguably adopted a more patentee friendly approach and require the Gx to take positive steps to prevent infringement. In light of the obiter comments from the Court of Appeal, the UK appears to be most closely aligned with the French approach.

Stuart then turned his attention to Floyd LJ’s test for infringement of Swiss-Type claims, that of whether the manufacturer knew or could reasonably foresee that the drug would intentionally be used for treating the new indication. Stuart pointed out that there had been some disagreement following Floyd LJ’s first articulation of this test, as to whether the manufacturer needed to foresee that a given box of tablets would be intentionally administered for the patented indication. This interpretation of the test had led Arnold J to a finding of non-infringement. However, Floyd LJ has now clarified that it is sufficient that the manufacturer foresees that some of the drug that it puts on the market will be so administered. The second mental element, i.e. that the drug will be “intentionally administered” is only intended to exclude “accidental treatment” i.e. where a patient is administered drug X for disease Y1 and unbeknown to the patient/physician, the patient is suffering from, and is treated for, disease Y2.

Stuart pointed out that the presence of these two mental elements is not the end of the inquiry. The Court appears to have recognised that in circumstances where a generic pharmaceutical company has taken all reasonable steps to ensure that its drug is used only for the non-patented indication(s), it does not seem fair that it should be found to infringe by virtue of it being reasonably foreseeable that some of its drug will be used in the patented indication due to flaws in the regulatory system. As such, a generic can avoid a finding of infringement if it has taken “all reasonable steps”. Although it is unclear exactly what will constitute “all reasonable steps” and it is likely to depend in part on the circumstances of each case, Stuart suggested that the following steps should be considered:

Alerting doctors/HAs/pharmacists in advance

Avoiding supply through certain channels

Avoiding oversupply vs. old indication market

Steps to update clinical software; and

Co-operating with NHS to issue guidance.

Stuart then turned his attention to the question of indirect infringement pursuant to s60(2). As s60(2) requires the supply of “means relating to an essential element of the invention,” it is necessary to consider what the invention in a Swiss form claim is. Stuart highlighted that s125 of the Patents Act states that an invention “shall, unless the context otherwise requires, be taken to be that specified in the claim.” As such, notwithstanding the wording of the claim, it is clear that the invention in a Swiss form claim is ascribing the novel therapeutic purpose to the medicament. The invention has nothing to do with “manufacture” or “preparation”. This is a case where the context does otherwise require. By adopting this approach, the Court of Appeal were able to reach a finding that there was no requirement for a downstream act of manufacture and as such, the ascribing of purpose by, e.g. the pharmacist in applying a label to the product, was relevant to the question of infringement.

Stuart concluded by suggesting that relief provides the best opportunity for the Court to take the necessary steps to reach a fair outcome. For example, Stuart suggested that it was perfectly possible to analyse the market share data / % of use for a particular indication and award financial relief accordingly. However, there was some discussion about whether this was possible in light of the different financial models relating to generic and originator pharmaceutical products.

On the question of interim injunctions based on second medical use patents, Stuart suggested that it was difficult to envisage a scenario in which the grant of an interim injunction precluding the generic pharmaceutical company from marketing its product would be appropriate. However, in the event that an interim injunction is awarded, Stuart considered that it would be important for the English Courts to be more prescriptive as to the terms of the injunction than they had arguably been in the past. Stuart noted that other European Courts have adopted this approach to injunctions.

In questions which followed the seminar, the panel considered the difference in the infringement analysis of Swiss type claims and post-EPC 2000 claims in light of Floyd LJ’s approach to the former. Notwithstanding that it is settled law that the former should be considered purpose-limited process claims and the latter purpose-limited product claims and as a result different sections of the Patents Act will be engaged, it was agreed that the analysis is likely to differ very little in practical terms, as the “ascription of purpose” will still amount to an infringing act, “divided” acts of infringement (i.e. where different entities carry out different parts of the claim) will still suffice and the reasonable foreseeability test imparted by the inclusion of the word “for” in the claim will still apply. It is plain that further case law will be required to crystallise Floyd LJ’s obiter comments in Warner-Lambert.

The panel also agreed that an ideal solution would include regulatory law reform. However, despite the apparent agreement of the judiciary (see Arnold J at paras 722-726 of Warner-Lambert v Actavis [2015] EWHC 2548 (Pat)), it does not appear that such reform is imminently on the horizon."

Wednesday, 7 December 2016

In the post-Brexit referendum world, is anyone else suffering from fatigue concerning the English proverb regarding the consumption of cake? This was even before a long lens photographer caught handwritten notes from a conservative MP's aide leaving a meeting with the Department for Exiting the EU last week, apparently commenting on a preferred post-Brexit model for the UK (see here). [The IP Kitten - trained from day one to keep files and notes hidden when in public places - shudders at such wrecklessness].

What about PPDs and standard disclosure in the Patents Court? Can the patentee be pro having cake and pro eating it? Mr Justice Birss has provided the answer in Varian Medical Systems AG v (1) Elekta Limited; and (2) Elekta Holdings Limited[2016] EWHC 2679 (Pat). This GuestKat apologises for continuing the cake idiom, but suggests it is worth it so that she can share a photo of the White Book (Volume 2) cake, as baked by her multi-talented Stephenson Harwood colleague Stephanie Wickenden.﻿

Essential eating for all IP litigators

The dispute concerns Varian's patent concerning a machine for use in radiotherapy in which a magnetic resonance imaging system is used to image the tumour which is receiving or is to receive the radiotherapy. The radiation beam comes from the linear accelerator. The invention provides for the control of the radiation beam in "real time" so that, if the tumour moves, as compared to its location as specified in the treatment plan, the radiation beam can follow it.

The claimants pleaded case included the following:
"After publication of the patent, prior to the issue of the claim form and thereafter, the defendants have infringed and threatened to intend to infringe [the claims] by doing the following acts in the United Kingdom without the claimant's consent:
(a) ... offering to dispose of ... a system comprising an MRI (magnetic resonance imaging) guided radiotherapy machine as claimed in at least the aforesaid claims of the patent." The defendants contend that they do not offer for disposal a machine with the relevant characteristic. CPR Part 63 and Practice Direction 63 para 6.1

The claimants submitted that offering for disposal was in issue but that no disclosure has been given in relation to it by the defendants. The application before Birss J concerned a discrete point of patent practice namely what the Product and Process Description (PPD) is for, and how the provision of a PPD interacts with a party's standard disclosure obligations. To the best of this GuestKat's knowledge, the issue does not appear to have been addressed head on in any other reported case. CPR Part 63 r63.9 relates to disclosure in patent cases and practice direction 63PD 6.1 is the provision which deals with product and process descriptions:

"6.1 Standard disclosure does not require the disclosure of documents that relate to –
(1) the infringement of a patent by a product or process where –
(a) not less than 21 days before the date for service of a list of documents the defendant notifies the claimant and any other party of the defendant's intention to serve –
(i) full particulars of the product or process alleged to infringe; and
(ii) any necessary drawings or other illustrations; and
(b) on or before the date for service the defendant serves on the claimant and any other party the documents referred to in paragraph 6.1(1)(a)."
Birss J concluded that paragraph 6.1 is concerned with the nature and characteristics of the product or process in issue and the question of whether the product or process falls within the claims. The fact that Elekta had served a Product Description in accordance with the practice direction did nothing to alleviate the defendants from whatever disclosure obligations they otherwise had relating to acts of infringement. In other words, the applicant's request for standard disclosure related to a different issue [more of a coffee with your cake than a second slice, muses the IP Kitten]. As a result, there was no reason why Elekta should not disclose documents which relate to communications with customers or potential customers relating to the development of its product.

IPKat Policies

This page summarises the IPKat policies on guest submissions and comments. If you have posted a comment to one of our blogposts and it hasn't appeared, it may be because it doesn't match our criteria for moderation. To learn more about our guest submissions, comments and complaints policy and the procedure for lodging a complaint click here.

Has the Kat got your tongue?

Just click the magic box below and get this page translated into a bewildering selection of languages!